Complainant has registered the domain name <marlboro.com>.

Respondent used the website located at “www.marlborofactory.com” to advertise and sell apparent counterfeit MARLBORO cigarettes “at factory price”. Respondent prominently displayed both the widely known MARLBORO word mark and the widely known MARLBORO trade dress.

When counsel for Complainant sent Respondent a cease and desist letter demanding the transfer of <marlborofactory.com> to Complainant, Respondent replied via email on August 26, 2007, inquiring only as to “how much money you can offer for the domain name marlborofactory.com?”. Respondent then changed the Infringing Website to read: “Dear smokers, Your favorite website has been closed by Philip Morris USA Inc.” Thereafter, the message was changed to state, “Website closed”.

5. Parties’ Contentions

A. Complainant

Complainant contends that Respondent used the MARLBORO trademarks in an effort to confuse consumers into purchasing counterfeit cigarettes which, although bearing packaging and marks virtually identical to that used by Complainant in connection with its MARLBORO cigarettes, were not authentic MARLBORO brand cigarettes.

Complainant further asserts that Respondent has no rights or legitimate interests in <marlborofactory.com>. Indeed, Complainant’s widely known MARLBORO trademarks are asserted to be integral to Respondent’s counterfeiting operation.

Finally, Complainant asserts the domain name <marlborofactory.com> has not been registered or used in good faith as Respondent used false contact information when registering the mark, utilized the site for the sale of counterfeit products, and attempted to sell the domain name to Complainant in response to the initial cease and desist letter.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(i) the domain names are identical or confusingly similar to the Complainant’s trademarks or service marks; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain names; and

(iii) the domain names have been registered and are being used in bad faith.

Complainant must carry its burden of proof by a preponderance of evidence. Bootie Brewing Company v. Ward and Grabebootie Inc., WIPO Case No. D2003-0185 (May 28, 2003).

A. Identical or Confusingly Similar

Numerous WIPO administrative panels have determined that the MARLBORO trademarks are widely known. See, e.g., Philip Morris USA Inc. v. Shelly, WIPO Case No. D2006-1367 (January 5, 2007) (noting that the MARLBORO trademarks “are among the most valuable trademarks in the world”); see also Philip Morris USA Inc. v. Cooltobacco.com, WIPO Case No. D2005-0245 (May 10, 2005).

The domain <marlborofactory.com> prominently contains the famous MARLBORO mark. The Panel finds that the domain name is confusingly similar to Complainant’s trademarks and is likely to cause confusion. Playboy Enterprises International Inc. v. Joao, WIPO Case No. D2006-1106 (December 1, 2006). See generally, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, §1.1.

B. Rights or Legitimate Interests

Respondent has made no attempt to demonstrate any rights or legitimate interests in the use of the domain name. The Respondent chose the widely known MARLBORO trademarks to draw Internet users to its website thus capitalizing on the association of the MARLBORO trademarks with Complainant’s tobacco products. AT&T Corp. v. Amjad, WIPO Case No. D2003-0327 (July 29, 2003); See generally, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 1.2. Nor does this dispute involve a claim by the Respondent of prior authorized use as a legitimate distributor or as a related company. See generally, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 2.3. Indeed, Complainant asserts, and the Respondent has not denied, that Respondent has used the domain to market unauthorized, counterfeit goods. Wellquest International, Inc. v. Nicholas Clark, WIPO Case No. D2005-0552 (July, 19, 2005); Farouk systems Inc. v. Originatlchi.com, WIPO Case No. D2007-1201 (October 9, 2007). Respondent did not present the Panel with evidence of any kind of rights or legitimate interests to the domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions § 4.6 (panel may draw negative inferences in absence of a response). The Panel finds that Complainant has demonstrated that Respondent has no rights or legitimate interests in the domain name <marlborofactory.com>.

C. Registered and Used in Bad Faith

The Panel finds the domain name was registered and used in bad faith. Respondent’s conduct presents clear indicia of bad faith. The Respondent is located in the United States and sold tobacco products. It is inconceivable the Respondent was not aware of the MARLBORO trademarks. See generally, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, §3.4. The Respondent provided incorrect contact information when registering the domain name. Hoffmann-La Roche Inc. v. Mill, WIPO Case No. D2007-0721 (July 11, 2007). See generally, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 3.6. Nor is it of any significance that Respondent has now placed a notice “Website Closed” at the domain name. See generally, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, §3.5.

Moreover, as stated by another WIPO Panelist, the “sale of counterfeit goods on a website accessible through the Domain Name is paradigmatic bad faith. This conduct supports the inference that Respondent registered this Domain Name with the bad faith intent to deceive consumers with its counterfeit products, and that it intentionally has used the Domain Name to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website and products. Courts, too, have severely punished counterfeiters who ply their wears on the Internet using deceptive domain names. The sale of such counterfeits via the Internet, where the goods cannot fully be examined by purchasers prior to shipment, makes consumer confusion virtually inevitable”. Wellquest International, Inc. v. Nicholas Clark, WIPO Case No. D2005-0552 (October 9, 2007). See also, Bayer AG v. Globex International, WIPO Case No. D2007-0812 (August 7, 2007).

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <marlborofactory.com> be transferred to Complainant.

William F. Hamilton
Sole Panelist

Dated: December 26, 2007

Источник информации: https://internet-law.ru/intlaw/udrp/2007/d2007-1609.html

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